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The Government of India, Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) has published the Patent (Amendment) Rules, 2014 on 28 February 2014. The amendments are effective from the date of publication.

The salient aspects of the amended rules include:

Applicant: Introduction of a third category of applicant for patent in the form of “small entity”.

The fees charged to small entity applicants have been fixed in between the fees for a natural person and a large entity. The applicants can now be categorized as follows:

(a)  Natural Person Applicant: Any natural person either alone or jointly with other natural persons.           
 
(b)  Small Entity Applicant: An enterprise (proprietorship, Hindu undivided family, association of persons, co-operative society, partnership firm, company or undertaking) engaged in “manufacture or production of goods” or “providing or rendering of services”, with the following limitation of investment:
 
(i)     Enterprise engaged in “manufacture or production of goods” with an investment in plant and machinery not exceeding ten (10) crore rupees. (Approx. US$ 1,611,085)
(ii)   Enterprise engaged in “providing or rendering of services” with an investment in equipment not exceeding five (5) crore rupees. (Approx. US$ 805,545)
 
In case of Small Entity applicant status, the applicant needs to provide an evidence for the same. Such evidence has to be filed at least once with the particular application number.
 
(c)    Large Entity Applicant: An applicant other than a Natural Person or Small Entity.

Official Fee: Establishment of a revised fee structure for filing of patent application as well as other proceedings before the Patent Office.

The revised fee structure is as follows:

           Natural Person:           Approx. 60% increase from the previous fee for a natural person.

            Small Entity:               Equivalent to the previous fee for a large entity.

            Large Entity:               Approx. 100% increase from the previous fee.

Copy of the revised fee schedule can be downloaded here.

Furthermore, filing an application or document with the Patent Office in hard copy (i.e., not availing the e-filing facility/online mode) would incur an additional 10% official fee in the respective category.

Also, in case of partial or full transfer of an application from an applicant with Small Entity status to an applicant with Large Entity status, the difference, if any, in the scale of fee(s) between the fee for Small Entity and the fee for Large Entity, in the same matter, is to be paid by the new applicant along with the request for transfer.

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火曜, 01 4月 2014 04:18

Enforcement Powers in Philippines

Pursuant to the recent amendments of the Philippines Intellectual Property Code (Republic Act No. 8293), the Intellectual Property Office of the Philippines (“IPOPHL”) issued Office Order No. 13-170 which provides the rules and regulations for the exercise of its enforcement functions and visitorial powers.

An Intellectual Property Rights Enforcement Office (“IPREC”) was established to receive information, complaints or reports from rights holders, other government agencies and the public in general relative to Intellectual Property Rights violations. The IPREC will be headed by the Director General and assisted by designated IPOPHL personnel.

IPOPHL enforcement actions are initiated by filing a verified complaint by the rights holder or its representative. Within 30 days from receipt, action must be taken to undertake any or all of the following enforcement actions:

(a) issuance of notice/warning to the respondents; (b) issuance of a visitorial order (“VO”) on the subject premises; (c) issuance of compliance order (“CO”) against the respondents; (d) immediate filing of administrative complaint before the local government unit concerns or other government agencies/tribunals; (e) referral of the case to the law enforcement agency for case build-up; (f) recommendation for application of search warrant; (g) dismissal of the complaint; (h) referral of the case to other government agencies for filing of charges for violation of other laws, rules or regulations; (i) such other actions necessary to ensure compliance with the provisions of the IP Code.

In the event a VO is issued, it shall be valid 10 days from issuance. The nature of the visit and the complained IPR violation must be duly explained to the owners, employees or representatives of the business establishment. Only those items prominently displayed in business establishments shall be noted in the Post-Operation report. The Director General may likewise issue a CO directing the owner of the business establishment to comply with the IP Code within 60 days to avoid the filing of an administrative action.

With fresh enforcement powers, IPOPHL is expected to provide the necessary assistance to trademark owners and support the fight against IPR violators in the Philippines.

 

 

 

火曜, 01 4月 2014 03:04

The Margins of Discretion in Singapore

The recent decision by the Intellectual Property Office of Singapore (IPOS) between V Hotel and Jelco Properties concerning an Application for Restoration of Trademark Application and Request for Extension of Time (EOT), shows that IPOS continues to take a stringent position with regard to procedural defaults such as an attorney’s delay in responding to IPOS within the deadline.
 
Facts
 
Trademark Application No. T1010045B for the mark (application mark) in the name of V Hotel (applicants) was published in the Trademarks Journal on July 1, 2011. An opposition was filed by Far East Hospitality Services (the opposition mark was later assigned to Jelco Properties, the respondents). The applicants were required to file their evidence within the extended deadline of October 2, 2013.
 
However, no evidence was filed by the applicants by October 2, 2013. On October 16, 2013, IPOS wrote to the applicants that the application was deemed withdrawn. Five days after receipt of the aforementioned letter, the applicants wrote to IPOS, submitting the form for EOT and explaining that the deadline was missed on account of a docketing error which was compounded by the solicitor-in charge going for a mandatory military reservist camp. On October 28, 2013, the applicants submitted their statutory declaration for the restoration of the subject application and sought leave for an interlocutory hearing.
 
 
Applicant’s Submissions
 
The applicants submitted that, as confirmed by Asian Aisle Pte Ltd v Ricegrowers Co-operative Limited[2002]SGIPOS7, Rule 83 of the Trademark Rules (Rules) enables the Registrar to allow a request for an EOT if such extension is in the best interest of the parties. Further, the applicants set out the principles expounded by the Court of Appeal in The Tokai Maru [1998]2SLR(R)646, which the Registrar ought to adopt while exercising his powers under Rule 83:
 
1. The “litigant should not be deprived of his opportunity to…have determination of the issues on merits as a punishment for a breach of these Rules” unless the other party is prejudiced and cannot be compensated in costs;
 
2. It is “rarely appropriate” to deny a party an EOT “where the denial would have the effect of depriving him of his defence because of a procedural default” and lead to prejudice that cannot be compensated in costs.
 
The applicant further submitted that there exists a “good explanation for the oversight” and no prejudice was caused to the respondents. They argued that in the interest of justice, procedural defaults should not be allowed to prevail over substantive justice, and blind adherence to procedural requirements would be “unnecessarily draconian” in the present matter.
 
 
Respondent’s Submissions
 
The respondents argued that Rule 83 mandates a balancing exercise between “public interest that rules relating to procedure are followed” for certainty and finality, on one hand, and “the need to ensure the determination of the issues on merits in the interest of justice” on the other hand. Thus, unless exceptional and extenuating circumstances exist, the public interest to promote certainty, finality and expeditious disposal of cases requires that IPOS ensure strict compliance with procedural time limits.
 
They further submitted that bona fide oversight or omission by the solicitor owing to incorrect docketing cannot be considered compelling enough in the present circumstances. The legitimate expectation on the part of the respondents that the opposition should be dealt with in due compliance of the Rules, together with the public interest associated with maintaining the procedural sanctity of the opposition proceedings, far outweigh the applicant’s delayed actions in defending their trademark application.
 
 
Decision
 
The Registrar refused the restoration of the subject trademark application and noted that there is no “general discretion” granted to the Registrar to extend prescribed time limits. These time limits are to be construed strictly unless exceptional circumstances dictate otherwise. The Registrar recognized the balancing prowess associated with the use of discretion and opined that the applicants had been unable to show the existence of compelling circumstances which made it pertinent for the Registrar to allow the extension of time superseding the public interest associated with deadlines and the legitimate expectation of the respondents that the sanctity of the opposition will be maintained.
 
This decision underscores the fact that while the Registrar has discretionary powers, it neither implies nor justifies the use of these powers without proper reason. Although there is no rule of law to define what error can be pardoned, it is important for party litigants to note that procedural defaults and bona fide errors and delays will not be condoned unless the applicant can establish an overall picture which is able to warrant the compassion of the Registry.

In Guy Neale and others v. Nine Squares [2013] SGHC 249, the Singapore High Court dismissed a trade mark invalidation suit and confirmed the requisite attributes for the establishment of goodwill in Singapore.

The Plaintiffs in that case comprises fourindividuals and two companies which carry on business as a partnership operating the restaurant, bar and club business known as “Ku De Ta” in Bali, Indonesia. The “KU DE TA” trademark was registered in Indonesia on March 20, 2001.

The Defendant is the registered owner of two trademarks in Singapore bearing the name “KU DE TA” (the SG marks). The 5th Plaintiff was a shareholder of the Defendant and was involved in its activities. He was made a party as the 5th Plaintiff because the action was brought by the “partnership” of which he was a party to. However, he gave evidence on behalf of the Defendant.

The 1st SG mark was registered on February 16, 2004, in Class 43 (restaurants, etc) as a trademark in Singapore. The 2nd SG mark was registered on June 30, 2009, as a trademark in Singapore to protect Ku De Ta-branded apparel, jewellery and music. The Plaintiffs instituted proceedings against the Defendant for:

  1. a declaration that the SG marks are held on trust for the Plaintiffs and should accordingly be transferred to the Plaintiffs; or
  2. an invalidation of the SG marks on the grounds of, inter alia, passing-off, breach of fiduciary duties, registration of the SG marks in bad faith and usurpation of corporate opportunity.
  3. At the outset, the High Court found that it was indeed conceivable for the Indonesian trademark to be owned legally and beneficially from parties different from those that legally/beneficially owned the SG marks. In this connection, the High Court agreed with the Plaintiffs that the name and the goodwill would be the most valuable asset of the partnership; and that from the outset, the parties had agreed that the name and goodwill would belong to the partnership.
  4. Be that as it may, the High Court found that there was no creation of an express trust as the Plaintiffs did not establish the requisite certainty of intention, that there was no usurpation of corporate opportunity and that there were no breaches of fiduciary duties.

With respect to ascertaining whether the applications to register the SG marks were made in bad faith, the High Court reiterated that an application for the registration of a trademark would be made in bad faith if the defendant’s conduct in applying for the registration of the trademark fell short of the normally accepted standards of commercial behaviour; and if the defendant subjectively knew of facts which would have made an ordinary honest person realize that what the defendant was doing would be regarded as breaching those standards.

To establish goodwill in Singapore, the Plaintiffs have to show the presence of actual or potential customers in Singapore at the material time. Indeed, the Plaintiffs’ grounds for invalidating the SG marks have a common denominator – the Plaintiffs must show that their “KU DE TA” trade mark was an earlier trademark within the meaning of the Trade Marks Act (Cap. 332).

In respect of the 1st SG mark, while the international publicity of Ku De Ta cannot be discounted in considering whether the trademarks were well known in Singapore, such publicity cannot be as relevant and significant as the publicity and advertising conducted in Singapore. Indeed, the ultimate inquiry is whether the trademark is well known in Singapore. Online travel guides and newspaper articles from other jurisdictions are of limited assistance unless there is proof of their distribution in Singapore or that they were read by Singapore residents. Mere publication of a book in Singapore does not imply that it was distributed here at all. In the circumstances, the court found that the evidence did not show on a balance of probabilities that Ku De Ta enjoyed goodwill in Singapore as at February 16, 2004.

In respect of the 2nd SG mark, the Plaintiffs submitted that Ku De Ta Bali enjoyed goodwill in Singapore when the Defendant applied to register the 2nd SG mark on June 30, 2009. In this respect, the High Court agreed that it was likely for Ku De Ta Bali (as a restaurant operating in Bali) to be well-known to the relevant sector of the Singapore public as well. However, the High Court noted that the 2nd SG mark was registered to only protect Ku De Ta-branded apparel, jewellery and music. In the circumstances, while the High Court was prepared to find some goodwill in Singapore as at June 30, 2009, for Ku De Ta as a restaurant, the High Court found that the evidence did not support the finding of goodwill as at that date for Ku De Ta-branded apparel, jewellery or music.

By reason of the above, the Plaintiffs’ claims vis-á-vis invalidation of the trade marks and the tort of passing-off also failed.

The Intellectual Property Office of Singapore (IPOS) has announced that the amendments to the Singapore Patents Act and Rules will come into force on 14 February 2014. This new system will affect all new Singapore patent applications, new Singapore national phase applications as well as new divisional applications filed on or after 14 February 2014.

The amendments will introduce several significant changes to both the requirements and procedures for obtaining a patent in Singapore, which include the change from a ‘self-assessment’ system to a ‘positive-grant’ system. Please find below a table highlighting the new changes to the system for your easy reference.

 

Current Patent System

New Patent System

1. Self-Assessment System

Patent may be granted even if the claimed invention does not meet the patentability requirements as long as the claims have been searched and examined before and there is no lack of unity objection.

The decision to proceed to grant and obtain a granted patent lies with the patentee.

1. Positive Grant System

Only applications that meet the patentability requirements can proceed to grant.

Applications that do not meet the patentability requirements will be refused.

The decision to allow patentees to proceed to grant and obtain a granted patent lies with the Examiner.

2. Two-Track Prosecution System

Patentee has the option to proceed via fast track (default) or slow track (with a request for block extension of time)

When the block extension is requested, relevant deadlines (i.e. to satisfy the examination requirements and to pay the grant fee) will be extended by 18 months.

Two deadlines for requesting search and examination i.e. 21 months and 39 months (with block extension) from priority date.

Two deadlines for satisfying examination requirements and paying the grant fee i.e. 42 months and 60 months (with block extension) from priority date.

2. Single Track Prosecution System

The option to request for a block extension of time is no longer available.

A simplified prosecution system whereby local Search and Examination deadline is fixed at 36 months from the priority date while the deadline to request for supplementary examination is at 54 months from the priority date.

Supplementary examination must be requested if the patentee wishes to rely on a corresponding granted/allowed patent or final examination results from the prescribed patent offices.

The Examiner will issue a Notice of Eligibility indicating the patentability requirements are satisfied and patentee may proceed to grant.

The Examiner will issue a Notice of Intention to Refuse indicating the patentability requirements are not satisfied and grant will be refused.

Patentee has the option to request for Examination Review to review the negative examination report or supplementary examination report within 2 months from the receipt of the Notice of Intention to Refuse.

Patentee can provide a written submission including arguments and/or amendments to overcome the unresolved objections.

If all the objections are resolved, a Notice of Eligibility will be issued. Otherwise, a Notice of Refusal will be issued and the application will be refused.

3. Voluntary Amendments

Voluntary amendments to the application can be made at any time before patent is granted.

Amendments are not allowed after search/examination is requested and before issuance of an office action.

3. Voluntary Amendments (Restricted)

Voluntary amendments are only allowed before requesting substantive or supplementary examination.

Further amendments can only be made in response to an office action from the Examiner.

4. Request for Extension of time (Short)

Patentee may request for a one-time extension of time for up to 3 months to extend certain deadlines.

A further discretionary extension may be requested with a valid reason.

4. Request for extension of time (Long)

Patentee may request for an extension of time for up to 6 months or 18 months to extend certain deadlines.

A further discretionary extension may be requested with a valid reason.

5. Post-Grant Search & Examination

Patentee may request for a post grant search and examination to consider new prior arts not previously considered in the search and examination report.

5. No Post-Grant Search and Examination

Post-grant search and examination procedure is no longer allowed after the patent is granted.

6. Patent Restoration (Strict)

A lapsed patent may be restored within 30 months from the date on which the patent ceased to have effect.

Patentee must provide valid reasons that meet the strict “reasonable care” standard.

6. Patent Restoration

A lapsed patent may be restored within 18 months from the date on which the patent ceased to have effect.

Patentee must provide valid reasons that meet the “unintentional” standard.

7. Surrendering of Patent

Patentee may surrender his patent by filing a request which will be published for third party opposition. The patent is deemed surrendered if no opposition if filed within the prescribed time period.

7. Surrendering of Patent

Patentee may only surrender his patent after certifying that each person having a right in the patent has been given at least 3 months’ notice of the surrender and has no objection to the surrender.

Positive grant system in more detail

Under the positive grant system, only applications that meet the patentability requirements can proceed to grant, i.e. only if a Notice of Eligibility is issued. The Notice of Eligibility is issued if the claims of the application are found to be novel, inventive and industrially applicable after ‘Substantive Examination’ or ‘Supplementary Examination’.

On the other hand, if applications do not meet the patentability requirements, a Notice of Intention to Refuse will be issued. The applicant would then have the option to request an ‘Examination Review’ or just allow the application to be finally refused.

‘Substantive Examination’ and ‘Supplementary Examination’ will be discussed further below:

Substantive Examination

The applicant may file a request for local substantive examination within 36 months from the filing date or priority date, whichever applies. The substantive examination is performed based on either (i) a local search report issued by Singapore (only if a request for search is filed within 13 months from the filing date or priority date); or (ii) a foreign search report issued for a corresponding foreign application. Alternatively, the applicant may request a combined search and examination within the 36-month deadline.

If the Examiner has objections on e.g. the patentability of the claims, clarity of the specification, support of the claims, additional matter, and/or double patenting, a Written Opinion will be issued detailing each objection. A response to the Written Opinion must be filed within 5 months from issuance of each Written Opinion. The substantive examination process must be completed within 18 months from the issuance date of the first Written Opinion.

Upon completion of the substantive examination process, the Examiner will issue a Substantive Examination Report along with a Notice of Eligibility or a Notice of Intention to Refuse. For the latter, the applicant would then have the option to file a request for an Examination Review or allow the application to be finally refused.

Supplementary Examination

Apart from the Substantive Examination option discussed above, the applicant may opt to obtain a Singapore patent on the basis of foreign examination results issued for a corresponding foreign application, by filing a request for Supplementary Examination within 54 months from the filing date or priority date, whichever applies. Required documents for filing the request include (i) a copy of either the corresponding foreign patent or the final examination results with allowed claims referred to in the results; and (ii) a table setting out how each Singapore claim is related to the allowed claims of corresponding application.

If the Examiner has objections on e.g. the support of the claims, additional matter, and/or double patenting, a Written Opinion will be issued detailing each objection. A response to the Written Opinion must be filed within 3 months from issuance of each Written Opinion. The supplementary examination process must be completed within 6 months from the issuance date of the first Written Opinion.

Upon completion of the supplementary examination process, the Examiner will issue a Supplementary Examination Report along with a Notice of Eligibility or a Notice of Intention to Refuse. For the latter, the applicant would then have the option to file a request for an Examination Review or allow the application to be finally refused.

We hope that the above information is helpful to you. Meanwhile, if you have any question on any of the above information, please do not hesitate to contact us.

 

 

 

 

Best practices for cost effective foreign filing require that applicants and practitioners be aware of the laws on secret prior art and non-prejudical public exposures. Two common issues which may arise in conjunction with any patent application that should be fully understood and appreciated by both patent applicants and practitioners are the pre-filing public disclosures and the "secret" prior art. This discussion will examine both of these issues with emphasis on patent practice in India and S.E. Asia.

"Secret" Prior Art:

Following the recent changes in US patent law from a ‘first-to-invent’ to a ‘first-inventor-to-file’ system, all world patent laws award the patent right to the first entity to file an application. If an earlier filed application discloses a later filed claimed invention, the later filed invention will be found to lack the requisite novelty in light of the earlier filed disclosure. Since patent applications are generally not published until 18 months after the filing or priority date, there is a period of up to 18 months where earlier filed cases are unknown to both the public and later filing applicants. This leads to "secret" prior art in which earlier filed, but unpublished, applications can be cited against the novelty of later filed claimed inventions.

Under the patent laws of most countries, the full disclosure of the earlier filed application will be used when examining a later filed application (the "total contents" approach). If a later filed invention is disclosed in an earlier filed application, the earlier filed application is the first-to-file on that matter and is therefore entitled to the patent right. (See the discussion on India below.)

The PCT is the filing method of choice for many applicants seeking patent protection in multiple countries. Under the PCT, the international (PCT) filing date is the effective national filing date in each designated state. For purposes of applicable prior art, an earlier filed application filed under the PCT will be prior art against the novelty of a later filed application just as though the filing were made directly in the national patent office. In order to give prior art status to an earlier filed but as yet unpublished application filed under the PCT, most countries require the PCT application to enter into the local national phase. If the earlier filed application does not enter the national phase, the earlier PCT-filed disclosure only becomes prior art as of its date of publication and not the international filing date. On the other hand, for countries where national phase entry is not required, every earlier PCT application will effectively be taken as secret prior art as of the international filing or priority date against the novelty of later filed inventions.

From the above discussion, it should be clear that the prior art effect of an earlier filed, unpublished application is judged on a country-by-country basis. An earlier, unpublished filing in Country A will be art against the novelty of later filings in Country A, but an earlier filing in Country A will not have a prior art effect in any other country where the earlier application was not filed in. As such, applicants should determine the conditions required for a PCT application to have prior art effect within each jurisdiction.

It is further important to be aware about "quasi-secret" prior art, potentially novelty (and inventive step)-destroying public disclosures that are not published or widely known at the time of filing. For example, papers presented at conferences held before the filing date of an application but not published until after will, in most countries, be prior art as of the date of the presentation, not the date of publication.

Pre-filing Public Disclosures:

At times, it may be necessary to run field trials, tests or experiments in order to determine if filing for patent protection is justified. However, in some cases, an inadvertent public exposure would prevent patenting in many jurisdictions because such exposures would be considered public disclosures in strict absolute novelty countries. This would result in some patent applications facing significantly narrowed scope or complete rejection as the result of pre-filing public exposures of the claimed invention.

The Patent laws of most countries have various exceptions to their absolute novelty criterion for pre-filing public exposures that occur as the result of a breach of confidentiality, abuse of a relationship with the rightful owner or otherwise wrongfully obtained information. In these cases, a patent may still be granted to the rightful owner provided that the rightful owner takes the necessary steps to file the patent application within a specified period of time. Additionally, disclosure at an officially recognized exhibition may also be non-prejudicial. In both cases, the application must be filed within a 6 to 12 month "grace period" following the wrongful disclosure or public presentation.

Over and beyond these exceptions to lack of novelty, many countries also have grace periods for pre-filing public exposures that meet the requirements under local law. It is important to realize that some jurisdictions do not forgive public exposures beyond those circumstances mentioned above. A prime example is the EPO. EPC Article 54 and 55 define the strict absolute novelty provisions of the EPC and provide for a 6 month grace period only for disclosure at an officially recognized conference or resultant of an abuse of the relationship with the rightful owner or his predecessor in title.

The former law in the US was at the opposite end, giving a one year grace period prior to filing for any public disclosure. Old 35 U.S.C. 102(b) stated: "A person shall be entitled to a patent unless - ... (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States." (emphasis added) This statute was altered considerably on 16 March 2013 when the America Invents Act came into full force. Now, the US still has a 1 year grace period, but only for specific disclosures. " ... A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention ... if -- (A) the disclosure was made by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor." (35 U.S.C. 102(b)(1), emphasis added) The "effective filing date" is defined in 35 U.S.C. 100(i) to essentially mean the filing date of the application or, if priority is validly claimed under 35 U.S.C. 119 [Paris Convention priority] or the benefit of an earlier US filing date is claimed under 35 U.S.C. 120 or 121 the earliest date so claimed. In effect, while limiting the grace period to disclosure of information obtained from the inventor(s), the grace period was extended back in time allowing for the 1 year period to run back from the earliest "priority" date in the application.

Allowing the grace period in the US to extend from the effective filing date is not unique. For example, both Mexico (Article 18) and Brazil (Article 12) have similar statutes with their 12 month grace periods running back from the filing date or the priority date. The situation in Canada, however, is different. CA Article 28.2(1)(a) states that the subject matter must not have been disclosed more than one year prior to the Canadian filing date; Canada's grace period does not extend back from any priority date. In all cases, however, the disclosure is limited to acts by the inventor or another who obtained the information from the inventor.

In Japan, tighter restrictions on disclosures are in place. Disclosures by a person having the right to obtain a patent by conducting a test or by making a presentation in a printed publication will be ignored provided the patent application is filed within six months of the disclosure. Additionally, Japan requires that the applicant give a thorough description of the exposure at the time of filing. (Article 30) Mexico has a similar requirement when relying on their grace period following a pre-filing public exposure (see Article 24) and Brazil reserves the right to request the details of any pre-filing disclosure.

If an invention has been publically disclosed prior to filing the patent application, there may be remedies to obtain valid patent protection in some countries by relying on the available grace periods. Be sure to check with your local agents before spending the resources to file applications on an invention which was disclosed prior to filing.

India and S.E. Asia:

The statutes relating to secret prior art in those countries with such provisions are mostly consistent with the discussion above, except for India that does not utilize the "total contents" approach

The situation relating to pre-filing public disclosures varies as much across India and the S.E. Asian countries as it does across the countries in the general discussion above. Some limit non-prejudicial disclosures to necessary experimental work (ID). The period from public disclosure to filing required also varies across the region from 6 to 12 months.

Additionally, when obtaining patent protection in a particular country, be sure to keep a close watch of the publication of filings by others in the same or related areas of technology. Remember that "secret" prior art is only secret during the period from the priority or filing date to the date of publication, a maximum period of about 18 months. With few exceptions, prior to publication earlier filed applications can only be applied against the novelty of later filed inventions.   Monitoring the relevant publications coupled with knowledge of local laws on the prior art effect of earlier filed, but later published applications will allow one to anticipate and overcome the relevant "secret" prior arts which may be relied upon by the examiner and cited against the novelty of the application during examination of the application.

"Secret" Prior Art.:

India: Indian law provides for secret prior art in the form of earlier filed, but unpublished claimed inventions. In this respect, India differs from other countries in the region that use the total contents approach discussed earlier. For an earlier filed, unpublished application to negate the novelty of a later filed invention, the later filed claims must be anticipated by the claims in the earlier filed application.

Indonesia: The law in Indonesia considers the full technical disclosure of earlier filed, unpublished applications to be prior art against the novelty of later filed applications.

Malaysia: Applications having an earlier priority date are prior art against the novelty of applications with a later priority date provided the anticipating material in the earlier application appears in the grant of the earlier application.

The Philippines: Patent applications with an earlier filing or priority date are prior art against the novelty of applications with a later filing or priority date. However, for an earlier filed application to have effect as prior art as of its filing or priority date, it must be published under the PH patent act.

Singapore: Earlier filed, unpublished SG patent applications are prior art against the novelty of later filed applications provided the anticipating material was in the application at the time of filing and also in the publication.

Thailand & Vietnam: There are no provisions under TH or VN law for earlier filed, unpublished applications to be prior art against later filed applications.

Grace Periods for Pre-filing Public Exposures:

India: India has a limited 12 month grace period for public working for purposes of necessary, reasonable trial by the inventor, successor in title or third party with the inventor's consent. The 12 month grace period also applies to disclosure at an officially recognized exhibition, a publication from such an exhibition, a paper read before a learned society or used by a third party based on such disclosures without the consent of the inventor.

Indonesia: Indonesia's law parallels Indian law on the conditions protected by their grace period. Under Indonesia law, the patent application must be filed within 6 months of the public exposure for R&D experimentation (testing) or presentation at an officially recognized exhibition.

Malaysia: Malaysia has a one year grace period for disclosures by the applicant or predecessor in title. A like grace period is available for disclosures resultant of abuse of the applicants’ rights. There are no apparent restrictions on the types of disclosures by the applicant that qualify for the grace period.

The Philippines: A 12 month grace period preceding the filing or priority date is available in The Philippines for disclosures by the inventor or a third party who obtained knowledge from the inventor. There is no applicable grace period for other types of disclosures prior to filing.

Singapore: The law in Singapore has a 12 month grace period applicable to public disclosures by the inventor as well as for disclosure at officially recognized exhibitions as well as disclosures of information obtained unlawfully from the inventor or in violation of a confidence.                                                  

Thailand: Thailand has a 12 month grace period for public disclosures by the inventor as well as for disclosures made in consequence of an unlawful act or at a recognized international exhibition.

Vietnam: Vietnam has a very limited 6 month grace period for publication without the permission of the person holding the right to apply for and be granted a patent, disclosure by the owner in a scientific paper or displayed at an officially recognized exhibition. There is no grace period for other types of pre-filing public disclosures.

Parting Thoughts:

Pre-filing disclosures and "secret" prior art can have a significant effect on the ability to obtain successful patent grant and protection in all the desired countries. Maintaining an awareness of the laws of each country of interest regarding grace periods, or lack thereof, and the types of disclosures that qualify for them is critical to planning a cost effective filing strategy. When a public disclosure has occurred prior to the filing or priority date of the patent application, much is at stake. It is also critical to know the requirements in each country to take advantage of their grace periods, such as requirement of filing a complete disclosure of the public exposure at the time of filing. Working closely with your local agent in each country will allow you to keep up-to-date on local laws and requirements and allow formulating an effective filing strategy to achieve a meaningful patent protection in all the desired countries.

Tsujimoto Kenzo (“the Applicant”), the proprietor and founder of a winery called Kenzo Estate, located in California, had applied for the trademark “KENZO ESTATE” in Singapore in 2008 under Class 33 and the same was published in February 2010.  Kenzo (“Opponent”), a fashion house engaged in the manufacture, sale and distribution of products like fragrances, clothing, houseware etc., filed an opposition in June 2010. After a Pre-Hearing Review and submission of substantive evidence, the opposition was heard in April 2013.

Though the Opponent did not have any registrations in Class 33, they had registered the word and stylized form of the mark “KENZO” in various other unrelated classes in Singapore. The Opponent in 1997 and in 1999 had launched one special cognac vintage named “HENNESSEY BY KENZO,” signed by their founder and famous designer Kenzo Takada.

The Opponent argued that the Applicant’s mark was similar to the Opponent’s well-known trademarks and that the use by the Applicant would indicate a connection with the Opponent which could damage their interests.  In determining the issue of similarity, the Registrar looked at the visual, aural and conceptual similarities of the marks, as well as the overall distinctiveness of the Opponent’s mark. It was held that the Applicant’s mark was not visually similar to a great extent to the Opponent’s stylized mark, as the latter contained a stylized depiction whereas the former was in regular font. With respect to aural similarity, relying on the test of quantitative assessment of the relative number of syllables which are common, the Registrar opined that there were only two syllables in common between the marks and therefore there was a small degree of aural similarity. On the issue of conceptual similarity, the Registrar noted that word “KENZO” is a personal name. However, use of the qualifying term “ESTATE” suggests a spacious place which would operate to change the meaning of the mark. In the final analysis, the Applicant’s mark was therefore termed as visually and aurally similar to a small extent but conceptually dissimilar to Opponent’s word mark.

In determining whether the Opponent’s mark was well-known, the Registrar, considering the evidence submitted and established precedents, found the Opponent’s marks to be well-known to a relevant sector of public in Singapore.

In considering whether the use of Applicant’s mark would create a confusing connection with the Opponent, the Registrar noted that the goods and services covered by the contending marks are different from each other. The Opponents’ collaboration with HENNESSEY appeared as co-branding exercise rather than a business extension into a market similar to that of the Applicant. Further, as the customers of both the Applicant’s and Opponent’s products would belong to a “high-heeled” and “discerning” class, they would be able to identify the dissimilarities in use of the two marks and would differentiate the marks “easily.” On the balance of probabilities, the Opponent failed to show how use by the Applicant would create a confusing connection.  The Opponent also failed to show that use of mark by Applicant would damage the Opponent’s interests.

Since substantive similarity, connection with the Opponent and damage to Opponent’s interests could not be proven the primary ground failed.

The Opponent also argued that their marks were well-known to public at large in Singapore and therefore use by Applicant would damage their interests and goodwill. The Registrar rejected their argument finding that the Opponent’s marks did not fall into this rare and exclusive class of trademarks which are well-known to the public at large.

The Opponent further claimed that Applicant was passing off their goods as those of the Opponent by using Opponent’s mark. Although the Registrar found that the Opponent had goodwill in Singapore, the Registrar was of the view that Opponent failed to show any actionable misrepresentation by the Applicant and actual or potential damage to the Opponent. Hence, this claim was also unsuccessful. Similarly, the Opponent’s argument that the Applicant had applied for its registration in bad faith did not meet the required standard of proof on a balance of probabilities and therefore failed.

This decision by IPOS reflects the policy consideration behind not allowing trademark owners a monopoly to run beyond a specific class of goods. Merely having launched one vintage cognac and the mere possibility of venturing into greater realms in Class 33 does not preemptively give to the opponent the exclusive right to disallow other players who are in the field. The decision reinforces Singapore’s stance on developing intellectual property jurisprudence that ensures that all market players are treated equitably. 

木曜, 28 11月 2013 03:03

New Trademark Laws for Myanmar

The Myanmar government is aiming to introduce new intellectual property laws by early next year.

Currently, trademark applications are  filed  in  the  form  of  a  Declaration  of  Ownership  of Trademark “DOT”, with the Deeds Registration Office.  Each trademark must be filed using one DOT for each mark. The Applicants are also required to execute a notarised and legalised Power of Attorney (PoA) in favour of a local agent. It is important that the POA and DOT must be signed by one and the same person.   After submission of the DOT and PoA, the trademark application will be registered.  

Further, it is customary to publish a “Cautionary Notice” in a Myanmar newspaper, advertising the mark holder’s ownership.

It is important to note that at the time of application for registration, all documents must have a validity of three (3) months from the date of execution in their country of origin.

The business world waits in anticipation for the new law, which as the buzz goes would strike a balance between the needs of Myanmar as a developing nation and measures to ensure that the intellectual property is well protected. In this shifting legal landscape, while waiting for the new law to be finalized, intellectual property owners hoping to establish a foothold in the lucrative Myanmar market need to act now.

Clients are advised to register their rights under the existing law to secure first mover advantage, in the event that such registration is given priority under the new laws

 

 

 

 

PT Perusahaan Gas Negara (Persero) Tbk (PGN) (the Defendant), is an Indonesian company involved in the business of transmission and distribution of natural gas. In 2012, an action for infringement was filed by M Rimba Aritonang (the Plaintiff) in respect of Design No. ID0009708 entitled “Meter Box Adaptor” and was assigned Case No. 73/D.I/2012/PN.Niaga.Jkt.Pst. 

meter box adaptor                                                                                                   Industrial Design No. ID0009708

On August 12, 2005, M Rimba Aritonang filed a design application with the Directorate General of Intellectual Property (DGIP) under Application No. A00200503388 and Locarno Classification 23-01 claiming the shape, configuration and composition of lines as shown in the representations below. This design protects natural gas pipe joints from catching fire from flames or through the sun. The industrial design was granted by DGIP on August 28, 2008, under Design No. ID0009708 and is reproduced below as Figure 1.

Design No. ID0009708

On November 14, 2012, the Plaintiff registered his suit with the clerk of the Commercial Court at the Central Jakarta District Court. The Plaintiff is a retired employee of the Defendant and claimed that the Defendant had used his design and manufactured products using the said design since 2006, without his permission, as the holder of the Certificate of the Right to an Industrial Design. Consequently, the Plaintiff asked the Defendant to pay compensation for damages in the amount of Rp132.39 billion (US$11.8 million).

The Defendant argued that the Plaintiff designed the pipeline protection connection when he was working with the Defendant, hence, for all intents and purposes, the design registration belonged to the Defendant. The records show that the Plaintiff worked with the Defendant from 1967 to 1997 and that the disputed design was conceived in 1990 when the Plaintiff was still under the employ of the Defendant. Additional defenses were raised on the basis that the design registration should not have been granted by the DGIP as it has absolutely no uniqueness or distinctiveness over prior disclosures, thus lacking novelty.

The Plaintiff’s lawyer confirmed that his client had worked with the Defendant. However, he argued that his client had designed a different and novel adaptor which qualified for design registration. He also explained that before his client got exclusive rights, DGIP had published the registration. During the specified period, the Defendant had never filed an opposition.

After due consideration of the arguments and evidence submitted by the parties, the Commercial Court of Central Jakarta rendered judgment on April 4, 2013, in favour of the Plaintiff and concluded that the Defendant indeed infringed the industrial design. The judges decided that the Defendant pay Rp180 million (US$16,100) as compensation.

This case illustrates the importance of protecting intellectual property rights at the onset. The issue of ownership could have been avoided had the Defendant registered the original design when it was conceived. Indonesia adopts the first to file system. Accordingly, it is open to third parties to copy a concept and file the application before the owner, thus depriving the actual owner of its proprietary rights.

 

 

 

The recent case of Pfizer Ireland Pharmaceuticals (“appellants”) and Ranbaxy (Malaysia) Sdn Bhd (“respondents”) springs out of an invalidation action initiated by the respondents to cancel  Malaysia Patent No. MY-111446-A entitled “Pyrazolopyrimidinones for the Treatment of Impotence” (the “446 patent”). The appellants raised the issue as to whether the courtmalaysia petronas tower3 had the power to amend a patent post grant and while the subject of  an invalidation proceeding under Section 56(3) of  the Patents Act 1983 (“the Act”). In so doing, the court had to draw a clear line on the interpretation of Section 79A of the Act and Order 20 Rule 8 of  the Rules of the High Court (“RHC”). 

Section 79A of the Act states that a patent document cannot be amended after grant  unless there has been a typographical error, or such  amendment  is supported by the  specifications and does not go beyond the initial disclosure of the said patent. Section  79A (3) further states  that the registrar shall  not amend a patent if there is a pending  court action on the invalidity of the said patent.

On the other hand, Order 20 Rule 8 of the RHC gives the court the power to amend the  pleadings including ‘other documents.’ Hence, the  appellants    argued that “other  documents” includes the patent document which is the subject of the present case. Note  that the Act is silent  on whether the court   has the power to amend the patent during an  invalidation proceeding.

Prior to the decision of the Federal Court, the issue was first raised in the High Court  where the respondents had brought an action for   Invalidation against the appellants’446  patent. The main action is based on the fact that the corresponding European Patent No.  EP 0702555  B2 (“EP 555”) of which the present 446 patent was conformed had been  rejected by the Technical Board of Appeal of the European Patent   Office.

The appellants in order to avoid invalidation of their 446 patent commenced a separate application in the High Court to amend their 446 patent   by    reducing the 13 claims of that patent which were in conformity with the rejected EP 555 patent to an amended single claim by invoking   Order 20 Rule 8 of the RHC.
It was decided in that case that the powers of the Court to order the amendment under Order 20 rule 8 of the RHC are restricted and confined   only to Court documents and pleadings.

The High Court decided that if such an amendment was allowed, it would deprive the respondents of their right and opportunity to seek redress in its invalidation claim of the appellants 446 patent. Further, the amendment to 446 patent would change the character of the suit and cause injustice to the respondents.

Aggrieved, the appellants elevated the suit to the Court of Appeal which decided in favour of the respondents stating that the courts have to balance between whether by granting leave to amend the 446 patent the other party would suffer injustice. In the present case, it was affirmed that if the court were to allow the appellants to amend their 446 patent, the respondents would suffer injustice that would not be compensated by cost as their statement of claims and particulars of objection would have to be altered drastically.

The Federal Court agreed with the lower courts and held that the RHC does not permit amendment of documents which are introduced as evidence in a suit. Secondly, the express words of Section 56 of the Act give the court the authority to invalidate a patent but does not permit or empower the court to amend patent documents. Thirdly, the court’s inherent powers are limited to procedural and exclude alteration of substantive matters.

The foregoing decision harmonizes what seems to be a conflict between Section 79A of the Act and Article 20 Rule 8 of the RHC. Patents subject of an invalidation proceeding are evidence and as such may not be amended by the courts post grant on the guise that said patent documents form part of “other documents.”

 

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